The www.mumm.ru domain was transferred to the trademark owner.
The champagne producer G. H. Mumm & Cie. has succeeded in banning the use of the domain name www.mumm.ru, even though the domain was not used for commercial purposes.
Mumm & Cie claimed that the presence of this domain prevented it from promoting its products in Russia.
This domain was the subject of lengthy legal proceedings. Initially, the Moscow Arbitration Court dismissed Mumm & Cie's claim, arguing that simply registering the domain without using it for commercial purposes did not violate the plaintiff's rights.
According to Article 1484 of the Civil Code, using someone else's trademark on domains is prohibited if the website advertises products that are similar to one degree or another.
The panel of judges of the Supreme Arbitration Court (SAC) referred the case for reconsideration. The SAC ruled that the domain owner did not have the company's consent to use the trademark, and therefore, using someone else's trademark in the domain name was considered an abuse of power.
This decision can be considered a precedent—for the first time, the Supreme Arbitration Court (SAC) has allowed the seizure of domains similar to trademarks even if the websites are not used for commercial purposes. Until now, courts have recognized a violation of copyright holders' rights when a domain is used to sell goods and services of the copyright holder or a competitor.
In justifying its decision, the Supreme Arbitration Court stated that Article 10.bis of the Paris Convention for the Protection of Industrial Property of 1883 (hereinafter referred to as the Paris Convention) contains a general prohibition of unfair competition, which is understood to mean any acts that are contrary to honest customs in industrial and commercial matters, which is consistent with the legal position of the Presidium of the Supreme Arbitration Court of the Russian Federation (resolutions of 16.01.2001 in case No. 1192/00 and of 11.11.2008 in case No. 5560/08).
As the court pointed out:"Courts have developed criteria for determining violations of Article 10.bis of the Paris Convention and compliance with fair practices in domain name registration. According to these criteria, a domain name registration may be revoked if it is proven that: the domain name is identical or confusingly similar to a third party's trademark; the domain name owner has no legal rights or interests in the domain name; or the domain name is registered and used in bad faith. These criteria were not taken into account in resolving this dispute."
